(A) matching a target recipient profile with a group of target recipients;

(B) transmitting a set of bulk e-mails to said target recipients in said matched group;

(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,

(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity. (Pat. No. 6,431,400).

The district court held the claims invalid as anticipated and obvious as well as for failing to claim statutory subject matter under Section 101. On appeal, the Federal Circuit upheld the obviousness finding and left the alternative reasons undecided.

Of course, in 2000, targeted bulk e-mail was already around, and the defendants provided prior art evidence of steps (A)-(C). That is, marketers were already identifying target recipients, sending out e-mails, and calculating the percent received. Missing from the prior art was step (D) – iteratively repeating steps (A)-(C) until the number of recipients reaches the a prescribed quantity.

Evidence of Common Sense: The district court held on summary judgment thatKSRstyle “common sense” would lead one of ordinary skill in the art to perform the iterative step (D). On appeal, the Federal Circuit affirmed that finding – holding particularly that the finding of common sense does not require “explication in any reference or expert opinion.”

Although a court need not have documentary support of its common sense analysis, a court (or patent examiner) must at least clearly explain its reasoning.

We reiterate that, on summary judgment, to invoke “common sense” or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.

In this case, the appellate panel agreed that the idea of repeating already known steps until a threshold is met was simply a common sense extension:

Thus, this last step, and the claim as a whole, simply recites repetition of a known procedure until success is achieved. Recognizing this, the district court explained: “If 100 e-mail deliveries were ordered, and the first transmission delivered only 95, common sense dictates that one should try again. One could do little else.”

The court added an interesting caveat regarding expert testimony and the level of one of skill in the art — noting that expert testimony may well be necessary for “complex” technology.

If the relevant technology were complex, the court might require expert opinions. Here, however, the parties agreed that ordinary skill in the relevant art required only a high school education and limited marketing and computer experience. No expert opinion is required to appreciate the potential value to persons of such skill in this art of repeating steps (A)-(C).

Obvious to Try: As a corollary to its common sense holding, the appellate court also held that the additional step (D) would have been “obvious to try” under KSR. “[S]imple logic suggests that sending messages to new addresses is more likely to produce successful deliveries than re-sending messages to addresses that have already failed. . . . [I]ndeed, the predictable and actual result of performing step (D) is that more e-mail messages reach more recipients.”

Long-felt Need: The patentee argued that a nonobviousness conclusion was supported by evidence of the secondary consideration of long-felt need. Particularly, the method helps solve the recognized competing problems of reaching customers without “burning up” the mailing list by oversending.

The Federal Circuit rejected these arguments because the patentee had failed to provide any evidence of improved efficiency beyond “bare assertion.” In addition, the court suggested that any proof of long-felt need would be insufficient to “overcome [the] strong prima facie showing of obviousness.” (quoting Asyst Techs (2008))

Claim Construction: Interestingly, the court issued its summary judgment order prior to claim construction. The Federal Circuit found no error because construction of the disputed claim terms would not have changed the obviousness outcome.

Notes: The patent was originally titled “Statement regarding federally sponsored research or development.” That is apparently a typographical error fixed in a subsequent certificate of correction.

Big Guy, thanks. The comment I wrote in response to yours, I have now posted to the other running thread on obviousness, the guest piece from Paul Cole. I hope this will help to link the threads to each other.

No, but I can read and comprehend what I read — something you are apparently having problems with.

Unfortunately, it is not amazing that you expect everybody to remember all your past ramblings when you conveniently ignore what was written 2 or 3 posts ago. It isn’t amazing because to be amazed, one needs to be surprised, and no one is surprised because you are the quintessential message board troll. At least 6 tries to engage in an intellectual debate. He isn’t too successful, but at least he tries. You, on the other hand, couldn’t convince a starving beggar to take a $100 dollar bill.

I’m actually a fan of EPO-PSA, as well as the EPO. And I don’t pretend to be an expert on the subtleties of the EPC. I’m not going to get into an argument as to which system is better – they are simply different.

From a prosecution point of view, I agree with you that the EPO gives more consistent results at the administrative level. However, the applicant learns quickly that fighting an adverse decision in a close case is futile – the administration wins. Having grown up in the US system, I kind of like the fact that patentability issues in prosecution can be appealed to neutral judicial bodies. Sure it reduces certainty a little, but that makes life interesting.

These are simply differences between the administrative state, with judges that are really just tools of the administration, and our system, with its (increasigly shrinking?) separation between the executive, legislative, and judicial branches. Sure, we give up some degree of predictability. But the bureaucrats sometimes get it wrong – it’s nice to have the judicial branch looking over their shoulders.

1. Don’t make the mistake of supposing that national courts in EPC land are powerless to strike down bad patents issued by the EPO. Anybody can petition any court in any EPC country, to find the bad patent invalid. In fact, the English High Court, these days, spends most of its time doing sterling service hearing petitions to revoke such patents. The Petitioner is usually a generics company, and the patent owner is often “innovative” pharma. Sometimes the Petitioner succeeds, but by no means always.

2. The Technical Boards of Appeal of the EPO constitute the TRIPS-necessary judicial appeal instance, that corrects the administrative instance below.

Now, what (more exactly) was the point you wanted to make, about the relationship between the judge and the bureaucrat being one thing in Europe and a quite different thing in the USA?

“Thank goodness that, to this day, no patent-ignorant national Supreme Court squats on top of the by now 36 Member State EPO, as it goes about its daily work, deciding whether to accede to the request of the Opponent to revoke a duly issued European patent, or to grant the contrary request of the Owner, to uphold the opposed patent.”

What a wonderful thing it is, eh Paul, when serendipity is the Unintended Consequence.

I have in mind that there is no court of law to control EPO jurisprudence on obviousness.

When management pressed the green button at the EPO, back in 1978, all the Examiners in place were new to the EPO but most were steeped in the obviousness culture of the national jurisdiction out of which they were seconded. Just a small problem: how to get them all examining obviousness the same way, quickly and efficiently.

Who would have thought that the tool (EPO-PSA)quickly worked out by EPO management back then would turn out (with the benefit of 30 years of hindsight) to be so much more objective, fair, effective, predictable and intellectually rigorous than the best efforts of any subsequent national Supreme Court?

Thank goodness that, to this day, no patent-ignorant national Supreme Court squats on top of the by now 36 Member State EPO, as it goes about its daily work, deciding whether to accede to the request of the Opponent to revoke a duly issued European patent, or to grant the contrary request of the Owner, to uphold the opposed patent.

The EPO treats unexpected new function or result as the touchstone for inventive step, and uses it as the basis for identifying the technical problem. Without such an unexpected new function or result there is, possibly not invariably but almost certainly, no invention.

If such a test had been applied to this claim, it is plain on its face that no plausible new function or result could be identified. Even novice examiners, if properly instructed, should be able to screen out claims of this kind. It all depends, however, on having a consensus about the fundamental nature of invention.

And just so the trolls, wankers and lazy Examiners aren’t confused, this claim would be prima facie obvious (and invalid) even if the “prescribed minimum” was set forth as a specific number and the number of repetitions was likewise specified.

I suspect that some of those who berate the PTO for letting this claim through to issue routinely berate PTO Examiners who have the temerity to object to the claims they themselves are prosecuting.

I suspect it must be quite hard for PTO Examiners (only human, after all) to maintain objections in the face of furious reaction from the prosecutors working on behalf of clients who have already made a serious investment in those claims and are insistent on getting some value for their money.

I submit that it isn’t Dudas to blame but, rather, a system that rewards the bludgeoners with a Presumption of Validity that withstands all evidence of invalidity (except that which a jury of good citizens and true finds “clear and convincing”).

It behoves officers of the court to criticise the system (rather than Mr Dudas) when it is the system, as such, inherently, which is the deliverer of the universally acknowledged “crappy” results.

Preserve a Presumption of Validity…YES

Switch from clear and convincing to preponderance…YES

Reduce the burden of PTO fees at the point of filing, and import a swingeing increase at the point of issue, then follow with non-trivial annuities and equitable restrictions on freedom to excise bad claims after issue. That will make ’em think….YES

Then sit back and observe the consequences. More civilised prosecution, more thoughtful Applicants, prosecutors behaving more like Officers of the Court. More respect all round for the patent system. Win-win…YES.

Once again, we get a glimpse into the mind of Mooney, a confused, angry, dirty, toilet infested world – where recalcitrant attorneys slink into the PTO offices under the cover of darkness to conduct clandestine Examiner interviews, off-the-record, so they can fill the world with crappy claims so as to enable them to greed grub the whole day through.

Mooney is operating under the sad delusion that people hang on, and remember his every word.

BUWAHHAHAHAHAHAHAH

JD, I agree and would have traversed by a seasonable challenge to the taking of ON. Pretty standard.

Incidentally, the fact that Mooney pooh poohed it should confirm that he is a useless hack, who probably waits tables for a living, and should give your comfort that it would have been the right thing to do.

Malcolm, there are many things for which Mr Dudas can be held responsible, but putting responsibility individually and personally on him for the issue of this claim is arguably going too far.

If we look at the ratio decidendi in this case, it appears to be that the “common sense’ rule is available and that it should be applied in this factual situation. Hopefully this is a decision that will not be followed (or need to be followed) with any great frequency.

Are you 6’s lawyer now? When did that happen — before or after you dreamt up this relatively new sockpuppet?

You and I can both agree that perhaps you can take official notice of a well know concept (“try, try again …”),

Great. Then we agree that this claim is crap, the PTO blew it, and the courts got it right when they said that the claim is obvious because “repetition of a procedure until success is achieved” is what logical, reasonable people do when attempting to obtain a minimum standard using a procedure that achieves results incrementally.

As everybody has noted, the dicta will now creep into PTO rejections and district court decisions.

What “dicta” is in this case that is any more upsetting than what can be found in KSR? Get a grip. Nothing new here. The only interesting aspect of this case is just how absurdly crappy the claim is. Heckuva job, Dudas.

What was stated was: “If an examiner had found steps A,B, and C, and then taken official notice re: step D”

What I wrote was:
“You can take official notice of facts — not conclusions.
Moreover, there is no way you could have taken official notice that all the limitations in step (D) were well-known since it was admitted that step (D) wasn’t in the art.”
I then stated “At best, you can take official notice of a concept and then work your analysis from there.”

You wrote in response: “It appears that you are trying desperately not to understand. The official notice referred to is the official notice is that ‘repetition of a procedure until success is achieved is what logical.”

It is you who are desperately trying not to understand. The official notice being referred wasn’t the concept (i.e., the repetition of a procedure ….). Instead, what 6 was going to take official notice of was step D (i.e., the whole step). You and I can both agree that perhaps you can take official notice of a well know concept (“try, try again …”), but that is not was 6 was talking about.

“Or should the PTO be forced to spell everything out for you in big blocky letters with no more than two syllables per word?”
Absolutely, (although the big blocky letters are not necessary … I don’t worry about the two syllables per word because most Examiners and thus engineers don’t tend to be too flowery with their vocabulary) because five year olds can disagree on what is black or white or what is up or down or what is common sense or what is novel. Applicants pay $1000+ dollars to the USPTO to get an examination, not a white wash. I want the PTO to be forced to spell everything out because when they are forced to do so, they can identify those little niggling limitations that they may have omitted from their analysis.

ZAK and EG – I’m with you about the FedCir’s inability to follow requirements in reviewing decisions on summary judgment (substantive, burden of proof and inference (in favor of non-moving party)). It appears that they don’t understand (or ignore) the procedural posture of the case. They could have reached the same conclusion without all the dicta, but it appears the dicta will overshadow the real holding of the case. As everybody has noted, the dicta will now creep into PTO rejections and district court decisions. What a mess.

I know was coarse, and flippant, but I wonder if Yule Log’s comment above doesn’t go to the heart of the problem. It must be difficult for judges to frame appropriately measured reasons for dismissing such egregious cases.

An examiner would not make that admission. The examiner would acknowledge that the cited references do not expressly disclose repeating A,B,C, but would take official notice that interative processing in which steps are repeated until a condition is met is notoriously old and well known. If the examiner is right about that, then I suggest that the examiner has done sufficient fact finding to support the conclusion of obviousness.

The applicant could challenge the taking of official notice, but the examiner can maintain the rejection by simply finding references preferably in the analogous art, applying the principle. The examiner does not have to show repeating of the particular steps A, B, and C in order to maintain the rejection.

Let’s not lose sight of what Deere requires. G v D allows that there will be differences between the prior art and the patented invention. The question is whether or not those differences are obvious.

Finding all of the features of a claim in the prior art is just one way to find a claim obvious and challenging on that basis only works if the examiner is attempting to use an analysis that requires doing so.

AdvicefortheFuture: Moreover, there is no way you could have taken official notice that all the limitations in step (D) were well-known since it was admitted that step (D) wasn’t in the art.

It appears that you are trying desperately not to understand. The official notice referred to is the official notice is that “repetition of a procedure until success is achieved” is what logical, reasonable people do when ultimate success is defined as obtaining a “prescribed minimum quantity” of a particular result of the procedure.

In other words, you are wrong about there being “no way” that official notice could be taken.

We’ve had this discussion before: “due process” before the PTO assumes that the applicant or his/her represenative has the brain functionality of a five year old, at least. Do you disagree? Or should the PTO be forced to spell everything out for you in big blocky letters with no more than two syllables per word?

“who would have filed a response relying solely on a traversal of the taking of official notice?”

You can take official notice of facts — not conclusions.

Moreover, there is no way you could have taken official notice that all the limitations in step (D) were well-known since it was admitted that step (D) wasn’t in the art. At best, you can take official notice of a concept and then work your analysis from there. Sure it may be a bit harder to get all you ducks lined up in a row, but that is what due process requires. These are legal proceedings, not deciding whether you are going to get Thai or Chinese for dinner.

As someone noted before, “common sense” is the lazy man’s rationale for rejecting an application.

If an examiner had found steps A,B, and C, and then taken official notice re: step D, instead of applying common sense, who would have filed a response relying solely on a traversal of the taking of official notice?

I’m glad there are others out there that see this decision for what it is, i.e., as an awful way to analyze for obviousness. Again, the end result doesn’t bother me (I wonder on what basis the examiner allowed this patent). But what really bothers me is the pathway taken by the Federal Circuit to get to that result, and the potential collateral damage this may cause when other patents/patent applications are challenged based on unverifiable “common sense.”

Great question. Pre-KSR wanking? Or just another incompetent low-rent “computer engineer” Examiner doing his imitation of an anesthetized cow for Herr Dudas?

As for the usual clowns here weeping about this decision, I continue to chuckle at your desperation. Apparently you’ll never get it. Just keep on filing your client’s crap and appealing it, pretending the whole time that the PTO’s failure to “prove” that the sky is blue is a legal error. Your clients will pay you until they go broke. Then you can laugh all the way to the bank, unless you get sued for wasting their money (surely a well-deserved wake up call for many of you).

Evidence of Common Sense: The district court held on summary judgment that KSR style “common sense”… .

… ay, there’s the rub;

Each and every Judge and other Jurists, and PHOSITA’s sense of “common sense” is tainted by their agenda, primarily, whether or not they have skin in the game, e.g., if they are an infringer, or a patent holder,
they will,
of course,
hold diametrically opposed patent views.

Those with no skin in the game are easily persuaded by “politically correct” thinking they pick up from the media – the media is in large part financially supported by Cisco’s cartel, the “Coalition for Patent Fairness” – the cartel quite effectively and deceptively tainted the reputation of independent inventors in the media, and thus, the media tainted the minds of many of “We the People of the United States” with their anti-independent inventors’ patents propaganda.

HAMLET: To be, or not to be: that is the question:
Whether ’tis nobler in the mind to suffer
The slings and arrows of outrageous fortune,
Or to take arms against a sea of troubles,
And by opposing end them? To die: to sleep;
No more; and by a sleep to say we end
The heart-ache and the thousand natural shocks
That flesh is heir to, ’tis a consummation
Devoutly to be wish’d. To die, to sleep;
To sleep: perchance to dream: ay, there’s the rub;

I agree that such a decision could and probably should be supported in an S.J. motion by some [easily located] general prior art on “if it does not succeeed, try again” to support otherwise-naked “common sense” conclusions about a claim limitation.
But it is refreshing to see the CAFC starting to sustain summary judgements on 103 obviousness [and thus encouraging some District Courts to consider and decide such motions rather than ignore them] instead of forcing almost all such decisions back down for multi-million dollar full-blow jury trials on every possible issue. [Perhaps they have noted that KSR itself was a Supreme Court sustaining of a D.C. 103 summary judgment that the CAFC was overuled in just bouncing it back to the D.C. rather than seriously considering the 103 issue on its merits.]

This is a terrible decision. If it is “common sense” then the Examiner should have no trouble providing, say, half a dozen or a dozen references to demonstrate that it is “common”.

So, from now on, whenever an examiner can’t find a feature in the art, in addition to asserting that it is “obvious to try”, and that a person skilled in the art would understand it to be inherent, we will now see in every other office action that the missing element is a matter of common sense.

How many thousands of dollars of applicants’ money are going to be wasted trying to overcome these unbased, entirely subjective rejections?

Courts should decide issues of obviousness based on the evidence, and recourse to the individual knowledge and experience of the judge should be minimised.

What we are really considering here, I think, is the threshold between those facts that can be taken to be self-evident (thanks Mr. Jefferson!) and those which require evidential proof. It would be open to the court to say that repetition in the circumstances of the claim was self-evident, citing perhaps the maxim “if at first you don’t succeed, try, try and try again”. As there was some evidence to this effect, it would in the nature of things be safer to rely on it, citing perhaps the maxim that the more probable a fact is, the less the evidence needed to establish it. A court in Washington will readily accept that a dog was crossing a street, but would require very compelling evidence before accepting that a lion was crossing the same street, this not being an every-day occurrence in Washington. So it would perhaps have been good to say that the evidence about repetition is credible and is accepted, and that it accords with common sense.

Stepping back for a moment, how did this claim ever get granted? And who would have seriously thought that it would survive litigation? Engage reality check before venturing into court.

The Federal Circuit got the conclusion right, but using a horribly bad analytical approach. I’m not opposed to using “common sense” but in this context it needs to be supported by verifiable evidence of some sort. SCOTUS should be excoriated for what they said about using “common sense” in KSR International.

This case sends at least 2 really awful signals:

1. Suggesting that patent examiners may base obviousness rejections on “common sense” that isn’t supported by verifiable evidence. In commenting on the Lee case that said “omission of a relevant factor required by precedent is both legal error and arbitrary agency action,” Judge Linn’s opinion goes on to say: “However, this did not preclude examiners from employing common sense.” This is nothing more than a license to patent examiners to engage in unverifiable speculation. I can’t tell you how many times a patent examiner has told me a missing claim feature or element is “well known in the art” or “inherent” in the reference relied upon. If that’s true, why is the patent examiner unable to factually support what is “well known” or “inherent”?

2. Allows judges to completely discount expert testimony when there is no other evidence to support what is and is not “common sense.” I’m completely aghast at Judge Linn’s opinion saying that expert testimony was “not necessary in this case.” But there was no other “evidence” presented to factually support whether novel step (D) (which the alleged infringer conceded wasn’t taught by the art) was “common sense.” How can you suggest ignoring the only evidence factually supporting why this step not taught by the art is “common sense”?

As someone else has astutely said: “Common sense is the lazy man’s rationale for rejecting an application.” Mark my words, this case is going to be cited by the PTO for basing obviousness rejections on nothing more than unverifiable “common sense.” It’s hard to challenge a “phantom” and that’s exactly what “common sense” is, a “phantom,” when there’s no verifiable evidence to support it.

If the Patent Office issues 44 patents with the title “Cross reference to related applications” and at least three patents with the title “Statement regarding federally sponsored research or development”, should this organization be trusted to determine “common sense”?

Sorry Malcolm, to have troubled you with my use of the word “troubling”. I was indeed muddling up “common sense” with “what your guts are telling you”. That’s what it is, isn’t it?

I still haven’t got around to reading the Decision. Soon though.

Fuelling my thoughts was an imperfect recollection of something somebody famous said about “common sense” being that in which, at age 16, you have complete trust but which, thereafter, as you gradually get older and wiser, you learn not to trust.

I expect JAOI now to supply the accurate quotation.

BTW, I can confirm that “elementary reasoning and logic” is an indispensible ingredient of the EPO version of TSM. So that’s all right then.

I am curious if anyone else noticed that the cases the Court relied upon to establish its holding that common sense must be articulated in the record to invalidate a patent under 103 were primarily cases regarding appeals from the USPTO. The standard of review for appeals from the USPTO is substantial evidence to support a prima facie showing. The procedural posture of this case, however, was an appeal from summary judgment were the standard of review of is de novo to determine if there are no genuine issues of material fact and the moving party is entitled to judgment as a matter law.

The court failed to link a prima facie showing supported by substantial evidence with no genuine issues of material fact and entitled to judgment as a matter of law. Not that this detracts from my support of the holding. Nor am I saying that the difference between the standards is anything more than academic with no practical effect. I just notice that the Court completely ignored it and was curious if anyone had any thoughts on the matter.

Nice, nice. The Federal Circuit recognizes the worth of patent prosecutors. Invoking KSR, which is new law with retroactive effect, the patent may be invalidated with little or no malpractice liability on the prosecutor. I thank the judges very, very much. If you must reduce the number fo specious patents that have been issued over the years, thank you for not sacrificing the prosecutor on the alter of politics to that end.

Dear “A plurality of thresholding units,”
Thanks for the stats. After sharing your comment in the office, it was pointed out to me (again) that a title that actually ends up in the case can certainly appear to be a bit random (and not necessarily tied to the original specification) and while these are theoretically correctable during prosecution, and “correctable” post-issuance via the Certificate of Correction, the PTO’s Certificate itself may be in error. See the Certificate of Corrrection (there are really three Rs in the title of the certificate) for Pat. No. 5,850,399… and then there is a PGP like US2006/0111585A1 having the title of “Title of the invention…” and US 6,576,613 having the title of “Title inhibitors of urokinase,” where titles do not appear to be inhibited, and US 6,503,586, and…US2002/0111952 published with the title of “Real Title” (I guess that satisfied Section 154(a)(1)), and if one searches on “title,” one finds US 5,238,721 “Title structure and method of applying title” disclosing tile structures and methods of applying tile.

Also, there are three issued patents where “Statement regarding federally sponsored research or development” is the title, and three more where it’s included as part of the title immediately after the real title. Thirteen application pubs are afflicted with this illness as well.

What I don’t understand is why the title isn’t “Cross reference to related applications” since that was the first text to appear in the spec. There are 44 issued patents and 65 application pubs with that as part of the title or as the entire title.

No expert opinion is required to appreciate the potential value to persons of such skill in this art of repeating steps (A)-(C).

Indeed, no evidentiary showing at all is needed except for a clear statement as to why any one skilled in the art would repeat the first three steps. I seem to recall many threads a while back where I and 6 and a few others tried to explain this trivial aspect of the post-KSR landscape to a few recalcitrant zombie prosecutors.

Live and learn, gentlepeople. I wonder how many cases are on appeal right now at the PTO relating to claims as crappy as this one, or crappier. I’m guessing thousands. If Kappos does is his job, they’ll die there.